Ex Parte Kismarton et al

Patent Trial and Appeal Board

Feb 23, 2018

12839286 (P.T.A.B. Feb. 23, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/839,286 07/19/2010 Max U. Kismarton 05-0326-US-CIP 7909
122219 7590 02/27/2018
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin, Suite 2350
Chicago, IL 60606
EXAMINER
O'HARA, BRIAN M
ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
02/27/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bmatthias @ millermatthiashull. com
patentadmin @ boeing. com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAX U. KISMARTON and WILLIAM J. KOCH
Appeal 2016-000869
Application 12/839,286
Technology Center 3600
Before JENNIFER D. BAHR, KEN B. BARRETT, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify The Boeing Company as the real-party-in-interest.
Appeal Br. 1.
2 A rejection of claims 13 and 14 under 35 U.S.C. § 102(b) has been
withdrawn. Ans. 10.
Appeal 2016-000869
Application 12/839,286
THE INVENTION
Appellants’ invention relates to the ability of an aircraft to withstand
bird strikes. Spec. 17. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. An aircraft comprising a forward-facing aircraft section
including composite aircraft skin and a substructure for the
skin, the substructure including a plurality of hoop-shaped
composite frames designed to deflect elastically under bird
impact loads.
THE REJECTIONS3
The Examiner relies upon the following as evidence in support of the
rejections:
Hunt US 4,741,943 May 3, 1988
Yoshizaki US 5,843,558 Dec. 1, 1998
Head US 6,510,961 B1 Jan. 28, 2003
The following rejections are before us for review:
1. Claims 3, 7, 8, and 13 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 1, 12, and 16 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Head.
3. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Head.
3 A rejection of claims 1, 4, 13—16, and 19 under 35 U.S.C. § 102(b) as
anticipated by Kismarton (US 2007 /0095982 Al, pub. May 3, 2007) has
been withdrawn. Ans. 10.
2
Appeal 2016-000869
Application 12/839,286
4. Claims 4—11 and 17—19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Head and Yoshizaki.
5. Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Head and Hunt.
OPINION
Indefiniteness of Claims 3, 7, 8, and 13
Claim 3
The Examiner states that the term “1 to 3 times reduction” is a relative
and undefined term lacking support in the Specification by which a person
of ordinary skill in the art could be reasonably apprised of the scope of the
claim. Final Action 2. Appellants do not contest the Examiner’s rejection
which is hereby summarily sustained.
Claim 7
The Examiner states that the limitation “the skin fibers” lacks
antecedent basis. Final Action 2. Claim 7 recites:
The aircraft of claim 5, wherein the composite skin includes
reinforcing fibers: and wherein the longitudinal cap fibers strain
between 2 to 10 times more than the skin fibers.
Claims App. (emphasis added). Appellants argue that the above underlined
portion of the claim provides sufficient antecedent basis for “the skin
fibers.” Appeal Br. 19. The Examiner’s Answer fails to address Appellants’
argument. See generally Answer.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35
U.S.C. § 112, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
3
Appeal 2016-000869
Application 12/839,286
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). Here, the requisite standard has been met. We do not
sustain the Examiner’s indefmiteness rejection of claim 7.
Claim 8
The Examiner rejected claim 8 as indefinite solely by virtue of its
dependency from claim 7. In view of our decision regarding claim 7 above,
we do not sustain the Examiner’s indefmiteness rejection of claim 8.
Claim 13
The Examiner states that the limitation “varies from zone to zone as a
function of bird impact energy” renders the claim indefinite. Final
Action 2—3. Appellants do not contest the Examiner’s rejection which is
hereby summarily sustained.
Anticipation of Claims 1, 12, and 16
by Head
Claim 1
The Examiner finds that Head discloses all of the elements of claim 1.
Final Action 4. In particular, the Examiner finds that Head’s forward facing
section includes a plurality of hoop-shaped composite frames that are
designed to deflect elastically under bird impact loads. Id. In that regard,
the Examine considers that “all materials deflect elastically, at least
initially.” Id.
Appellants argue that Head fails to address the problem of bird strikes
or other high energy impacts. Appeal Br. 9.
Head ... is silent about how the elastic deflection is achieved:
by a substructure including a plurality of hoop-shaped
composite frames.
Id. at 11.
4
Appeal 2016-000869
Application 12/839,286
In response, the Examiner considers the claim language “designed to
deflect elastically” to be a mere statement of intended use. Ans. 12. The
Examiner states that “a recitation of the intended use of the claimed
invention must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the claimed
invention from the prior art.” Id. at 13. The Examiner contends that since
the structure of Head is “very similar” to Appellants’ structure, they would
both be capable of providing elastic deflection under impact loads. Id. The
Examiner states that “Appellant has not provided evidence that the structure
recited by Head is not capable of deflecting elastically under a bird impact
load.” Id.
In response to Appellants’ contention that the Examiner ignores the
limitation “under bird impact loads,” the Examiner states that the limitation
is so broad that “virtually any aircraft structure would meet the limitation.”
Ans. 13. The Examiner considers that a bird impact load can range
anywhere from a hummingbird contacting an aircraft at essentially no speed
to a 15 kg Andean Condor impacting an aircraft on takeoff. Id.
Furthermore, the Examiner states that:
the claims do not limit how much deflection exactly results in
elastic deformation, or how much force is necessarily needed to
cause a non-elastic deflection.
Id. “Thus all of the materials of Head are designed to deflect elastically
(under bird impact loads or otherwise) since initially all deflections are
elastic at some point.” Id. at 14.
In their Reply Brief, Appellants dispute the Examiner’s position that
“virtually any aircraft structure would meet the limitation” directed
elastically deflecting in response to a bird strike. Reply Br. 2—3. Appellants
5
Appeal 2016-000869
Application 12/839,286
contend that a “bird strike results in a high energy impact load.” Reply
Br. 2.
[A] person skilled in the art would understand that. . . bird
impact loads can damage the frames in the forward-facing
section of an aircraft.
Id. 2—3. Appellants argue that “conventional wisdom says to make the
frames stiffer and heavier to survive these bird impact loads.” Id. at 6.
Appellants and the Examiner disagree as to the meaning of “designed
to deflect elastically” — “under bird impact loads.” Appellants contend that a
“bird impact load” is a “high energy impact load.” Id. at 2. The Examiner
construes “bird impact load” as a range that is so broad that it encompasses
very slight loads (3 gram hummingbird) which would cause de minimis
deflection to which virtually any aircraft structure can react elastically.
Ans. 13.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, even under the
broadest reasonable interpretation, the Board's construction “cannot be
divorced from the specification and the record evidence,” In re NTP, Inc.,
654 F.3d 1279, 1288 (Fed. Cir.2011).
We are inclined to agree with the Appellants that a person skilled in
the art would understand that the patent application is concerned with bird
impact loads of such magnitude that they can damage the frames in the
6
Appeal 2016-000869
Application 12/839,286
forward-facing section of a conventional aircraft. See Reply Br. 3. In other
words, Appellants’ invention is an aircraft frame that, under certain impact
loads, will bend instead of break.
Here, the Examiner’s construction is unreasonable in light of the
Specification. NTP, 654 F.3d at 1288 (Fed. Cir. 2011). By taking the
position that “virtually any aircraft structure” satisfies the claim, the
Examiner effectively reads the limitation “designed to deflect elastically
under bird impact loads” out of the claim.4 Our supervising court
admonishes us that claim interpretations that render some portion of the
claim language superfluous are disfavored. See Power Mosfet Techs., LLC.
v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004)”); see also
Innova/Pure Water, Inc. v. Safari Water Filtration Sys., 381 F.3d 1111, 1119
(Fed. Cir. 2004) (“While not an absolute rule, all claim terms are presumed
to have meaning in a claim.”). The Examiner’s finding that Head’s frame is
designed to deflect elastically under bird impact load is in error as based on
a faulty claim construction.
Furthermore, the Examiner errs in finding that the structure of Head is
so similar to Appellants’ structure that it would be capable of providing
deflection under bird impact loads. Ans. 13. The limitation “designed to
deflect elastically under bird impact loads” is a functional limitation. A
4 We are sympathetic to the Examiners observation that:
the claims do not limit how much deflection exactly results in
elastic deformation, or how much force is necessarily needed to
cause a non-elastic deflection.
Ans. 13. However, this problem is better addressed, should there be
resumption of prosecution, under the indefmiteness provisions of 35 U.S.C.
§112, second paragraph..
7
Appeal 2016-000869
Application 12/839,286
patent applicant is free to recite features of an apparatus either structurally or
functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
(“[T]here is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims.”). Where the claimed
and prior art products are identical or substantially identical, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1255 (CCPA 1977). Essentially, the Examiner attempts to
invoke this burden shifting protocol in the Answer by stating:
The examiner contends that since the structure of Head is very
similar to Appellants structure, they would both be capable of
providing elastic deflection under bird impact loads.
Ans. 13. However, this burden shifting protocol should not be invoked
unless and until the Examiner has demonstrated that the prior art product is
“identical or substantially identical” or the Examiner otherwise has sufficient
“reason to believe” that the functional limitation is an inherent characteristic
of the prior art. Best, 562 F.2d at 1255; Swinehart, 439 F.2d at 213. Here,
the Examiner’s underlying factual findings are insufficient to shift the
burden.
As mentioned, the Examiner finds that Head’s structure is very similar
to Appellant’s structure. Ans. 13. According to the Specification,
Appellants’ elastic deflection properties are attributable, among other things,
to hoop-shaped frame elements that are comprised of different types of
fibers disposed in certain directional orientations. Spec. ^fl[ 27—33, Fig. 6. In
contrast and as pointed out by Appellants in their Reply Brief, Head
discloses a triaxial braid of carbon fibers oriented at 60 degrees. Reply
Br. 4—5; Head, col. 6,11. 44—65. Furthermore, we note that Appellants’
8
Appeal 2016-000869
Application 12/839,286
invention is comprised of a plurality of hoop-shaped frame members.
Claims App. claim 1; Fig. 4. In contrast, Head discloses an inner braided
layer that is essentially co-extensive in lateral extent to outer braided
layer 38, which envelopes the entirety of Head’s structure. Head, Fig 1A.
Instead of having a plurality of individual hoop-shaped frames, Head is
comprised of reinforcing elements 46 that are a part of and formed integrally
with inner braided layer 16. Id. col. 4,11. 14—31, Figs 1A, 2A, 2B. Hence, it
is a singular, unitary frame component, not a plurality of individual hoop­
shaped frame elements as disclosed and claimed by Appellants. Thus, the
structures of Appellants’ and Head aircraft skin and frame are sufficiently
distinct and dissimilar that the Examiner’s finding that they are “very
similar” lacks evidentiary support and, therefore, is insufficient to shift the
burden of proof unto Appellants.
In view of the foregoing we do not sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 120(b) as anticipated by Head.
Claims 12 and 16
Claims 12 and 16 depend from claim 1. Claims App. The
Examiner’s rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 1. Thus, for essentially the same
reason expressed above in connection with claim 1, we do not sustain the
rejection of claims 12 and 16.
Unpatentability of Claims 2 and 3
over Head
Claims 2 and 3 depend from claim 1. Claims App. The Examiner’s
unpatentability rejection of claims 2 and 3 contains insufficient findings and
reasoning to overcome the deficiency that we have noted with respect to the
9
Appeal 2016-000869
Application 12/839,286
anticipation rejection of claim 1 above. For similar reasons, therefore, we do
not sustain the Examiner’s unpatentability rejection of claims 2 and 3.
Unpatentability of Claims 4—11 and 17—19
over Head and Yoshizaki
Claim 4
Claims 4—11, 17, and 18 depend, directly or indirectly, from claim 1.
Claims App. The Examiner’s rejection of these claims contains insufficient
findings and reasoning to overcome the deficiency that we have noted with
respect to the anticipation rejection of claim 1 above. For similar reasons,
therefore, we do not sustain the Examiner’s unpatentability rejection of
claims 4—11, 17, and 18.
Claim 19
Claim 19 is an independent claim and differs in scope from claim 1 in
that it is directed to the “nose” section of an aircraft and the claimed
structure deflects elastically under “impact loads” as opposed to “bird
impact loads.” Claims App. In rejecting claim 19, the Examiner relies on
the same erroneous claim construction and fact findings that we have
previously discussed with respect to the rejection of claim 1 above. Final
Action 10.
Furthermore, the Examiner’s rejection relies on a determination that a
person of ordinary skill in the art would substitute the composite structure of
Head for the nose section of Yoshizaki. Ans. 14 (“Yoshizaki is simply being
used to teach placement of a similar [i.e., Head] composite structure in a
nose of an aircraft”). The Examiner’s rejection lacks sufficient findings of
fact and reasoning to persuade us that a person of ordinary skill in the art
would find it obvious to extend the “tubular” structure of Head so as to
10
Appeal 2016-000869
Application 12/839,286
fabricate a “nose” section of an aircraft. Head, Fig. IB, col. 3,11. 38—50
(“braid-reinforced tubular structure”).
Accordingly, we do not sustain the rejection of claim 19.
Unpatentability of Claims 12 and 13
over Head and Hunt
Claims 12 and 13 depend from claim 1. Claims App. The
Examiner’s rejection of claims 12 and 13 contains insufficient findings and
reasoning to overcome the deficiency that we have noted with respect to the
anticipation rejection of claim 1 above. For similar reasons, therefore, we do
not sustain the Examiner’s unpatentability rejection of claims 12 and 13.
DECISION
The decision of the Examiner to reject claims 3 and 13 as indefinite is
AFFIRMED.
The decision of the Examiner to reject claims 7 and 8 as indefinite is
REVERSED.
The decision of the Examiner to reject claims 1—19 under either 35
U.S.C. §§ 102(b) or 103(a) over the prior art is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED
11